The Dress Barn, Inc. v. Above.com Domain Privacy
Claim Number: FA1503001611223
Complainant is The Dress Barn, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2015; the Forum received payment on March 24, 2015.
On March 30, 2015, ABOVE.COM PTY LTD. confirmed by e-mail to the Forum that the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dressborn.com, postmaster@dressebarn.com, postmaster@drressbarn.com, postmaster@fressbarn.com. Also on April 1, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names are confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names.
3. Respondent registered and uses the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for the DRESSBARN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,785,570, registered November 25, 2003), used in connection with retail apparel stores.
Respondent did not submit a response. The registration dates for Respondent’s disputed domain names are:
<dressborn.com>....................................... May 30, 2007;
<dressebarn.com>..................................... May 31, 2012;
<drressbarn.com>..................................... February 14, 2008; and
<fressbarn.com>........................................ July 16, 2011.
Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the DRESSBARN mark under Policy ¶ 4(a)(i) through its USPTO registration. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names are confusingly similar to the DRESSBARN mark as they are simple examples of typosquatting, purposely altering one letter of Complainant’s mark in the domain names. Prior panels have found that such alterations to a mark, as well as adding the generic top-level domain “.com,” to be insufficient to overcome a finding of confusing similarity. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that Respondent’s <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names are confusingly similar to Complainant’s DRESSBARN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names, and is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the DRESSBARN mark in any way. Considering the WHOIS information and the fact that Respondent has failed to add any additional evidence for the Panel’s consideration, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Complainant argues that Respondent is using the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business, as well as links to Complainant’s own website. Presumably, Respondent receives click-through fees from such linked websites, which include “Women’s Dresses on Sale,” “Women’s Wear,” “Buy Clothing,” and “Women’s Clothing Store.” Panels routinely find that such use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has attempted to divert Internet users away from Complainant’s site via competing hyperlinks, resulting in bad faith disruption under Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent has engaged in bad faith disruption of Complainant’s business per Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent attracts Internet users to its website, presumably for pay-per-click fees from hyperlinks such as “Women’s Dresses on Sale,” “Women’s Wear,” “Buy Clothing,” and “Women’s Clothing Store.” The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent has also typosquatted, which evinces further bad faith registration under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dressborn.com>, <dressebarn.com>, <drressbarn.com>, and <fressbarn.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 1, 2015
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